WEST VIRGINIA RECORD

CLARKSBURG -- A West Virginia company has filed a federal suit against a Wisconsin company with the same name, alleging it lost business after its customers traveled long distances to go to the Wisconsin corporation.

Spa Roma, located in Morgantown, claims another Spa Roma, located in Milwaukee, has caused great confusion among its customers through online marketing.

"Defendant's use of Spa Roma's mark has caused actual confusion, mistake and deception in that individuals have traveled long distances for Spa Roma's services only to find out that they made appointments with Defendant via its online appointment system rather than with Spa Roma," the complaint filed Oct. 22 in federal court states.

Customers have also tried to use gift certificates at the Morgantown Spa Roma that had been purchased from the Milwaukee Spa Roma, the suit states.

The Morgantown Spa Roma feels it is entitled to the name because it filed a trademark with the U.S. Patent and Trademark Office on Oct. 25, 2002. It was approved Jan. 11, 2005.

When it filed the trademark, the Morgantown Spa Roma claimed a priority date of July 20, 1993, according to the complaint.

The Milwaukee Spa Roma was not formed until June 4, 1999, the suit states.

After its multiple problems, the Morgantown Spa Roma claims it wrote to the Milwaukee company on Sept. 24, 2007, asking it to stop using the same name as it constituted trademark infringement.

But the Milwaukee Spa Roma refused to cease its use of the name, according to the complaint.

"Defendant's infringement constitutes a willful and malicious violation of Spa Roma's trademark rights, aimed at preventing Spa Roma from continuing to build a business around a mark that it has long possessed," the suit states.

Because of the Milwaukee Spa Roma's use of the same name, customers automatically assume it is associated with the Morgantown business, a violation of the Lanham Act, according to the complaint.

The Morgantown Spa Roma claims it has suffered great damage to its business, goodwill, reputation, profits and strength of its trademark.

"An award of monetary damages alone cannot fully compensate Spa Roma for its injuries and Spa Roma lacks an adequate remedy at law," the suit states.

Actions of the Milwaukee Spa Roma constitute trademark infringement, the Morgantown business alleges.

The Morgantown Spa Roma is seeking a permanent injunction prohibiting the Milwaukee Spa Roma from using Spa Roma's mark or any variation of it; prohibiting it from using Spa Roma in any sort of thematic marketing concept; prohibiting it from diluting, blurring, passing off or falsely designating the origin of the mark; prohibiting it from doing any other act that would lead customers to believe the Morgantown business is associated with the Milwaukee business; and prohibiting it from using Spa Roma's mark for goods or service or on the Internet.

In addition, the Morgantown company is seeking an order that the Milwaukee Spa Roma be required to file a court report in writing and under oath detailing how it has complied with the permanent injunction.

It is also seeking unspecified actual damages, profits the Milwaukee company made as a result of its wrongful action and either three times the profits the Milwaukee Spa Roma made as a result of its wrongful action or three times Spa Roma's damages – whichever is greater.

It is seeking attorney's fees, exemplary damages, costs and other relief to which it may be entitled.

Jeffrey A. Ray of the Law Office of Jeffrey A. Ray will be representing the Morgantown company.

U.S. District Court case number: 1:08-cv-193